Why So Many Patent Filings Were Filed In The US On Or Before 15 March 2013

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Summary: Attorney Charles Macedo addresses the question: Why did so many patent applicants rush to file patent applications before the America Invents Act (AIA) law changes went into effect – and what might happen if they didn’t?

On March 16, 2013, the new priority rules under the America Invents Acts (“AIA”) went into effect in the United States.

Patent applications that were filed before March 16, 2013, continue to be governed under the old “first-to-invent” priority rules.

Patent applications that are filed on or after March 16, 2013 (and do not claim priority to patent applications filed before March 16, 2013), will be governed under the new “first inventor-to-file” priority rules.

Patent applications that are filed on or after March 16, 2013, and claim priority to patent applications filed before March 16, 2013, may be governed either under the old “first-to-invent” priority rules, or under a hybrid “first inventor-to-file” priority rule which includes a first inventor defense. When an applicant presents in one of these applications a claim that has an effective filing date on or after March 16, 2013 (such as may be the case in the context of a continuation-in-part application), all of the claims in that application or any application claiming priority to it will be subject to the hybrid priority rule. To the extent an application (and all of its parent applications) have only presented claims entitled to priority to applications filed before March 16, 2013, the old “first-to-invent” priority regime governs.

A further implication of the March 16, 2013 implementation date, is that the post-grant issuance proceedings will not apply to any applications filed before March 16, 2013, or applications filed thereafter claiming priority to applications filed before March 16, 2013 that are not subject to the hybrid rule.

In addition to the new priority rules, starting March 16, 2013, the AIA increased the scope of prior art available to invalidate patents. It now includes foreign offers for sale, sales, and public uses as prior art (the U.S. counter-parts have long been considered prior art). In addition, the new law now credits the foreign priority date of patents and published applications, whereas the patent law previously recognized only the U.S. filing date (or PCT filing date for PCT applications that designated the U.S.).

Within this context, based on (at least the perception) that the law old priority rules are preferable to the new priority rules and the greater availability of prior art, there was an unusually large number of patent applications filed in the days and weeks before March 16, 2013.

Patent Office estimates of filings made between March 19, 2012 and March 19, 2013, generally show a trend of roughly 1,000 to 2,000 non-provisional patent applications and less than 1,000 provisional applications filed each day, with a large peak of 14,000 non-provisional and provisional applications filed each day leading up to March 16, 2013. Based on differences between filing serial numbers, we saw a difference of 30,000 application numbers between applications filed on March 13 and March 14, 2013. We expect that there have been hundreds of thousands of patent applications filed in the weeks leading up to the change of the law.

Source: USPTO Data Visualization Center

So the question is why have so many patent applicants rushed to file patent applications before the new law went into effect?

Here are some reasons that we suggest motivated this behavior:

1. Patent applications filed before March 16, 2013, are governed under the old “first-to-file” rules and have these benefits:

a. A full one-year grace period
b. Allow the inventor(s) to swear behind intervening publications and patent applications
c. Are not subject to post-grant proceedings (which have a broader scope of review under the AIA act than ex parte reexamination or inter partes review)

2. Patent applications filed on or after March 16, 2013, are governed under the new “first inventor-to-file” rules and have these drawbacks:

a. Only have a limited grace period based on date of publication
b. Allow for the offensive use of publications in the U.S. but not outside the U.S.
c. Are subject to post-grant proceedings

3. Patent applications filed on or after March 16, 2013, and are subject to the hybrid priority rule, also face these restrictions:

a. Have only a limited one-year grace period based on publication under the new priority rules
b. Are subject to the old 102(g) priority rule, which allows for other people’s activities to be prior art if conceived, reduced to practice, and diligent in reducing the invention to practice
c. Are subject to post-grant proceedings after issuance and reissuance for 9 months

With these motivations in mind, the various strategies that were employed included:

1. Early conversion of provisional patent applications filed less than one year before March 16, 2013 in order to avoid a “hybrid” rule situation.
2. Filing of continuation-in-part applications in order to avoid a “hybrid” rule situation.
3. Filing of one or more continuations in order to avoid the risk of a “hybrid” rule situation.
4. Arranging for filings before March 16, 2013 and filings after March 16, 2013 of the same disclosure in order to set up an “old” rule situation with the earlier filings and a “new” rule situation with the later filings. As long as the disclosures are to be assigned to the assignee, the claims are not drawn to identical subject matter, and the earlier application was not published before the later application, then these two sets of applications can result in potentially different possibilities of prior art.
5. Filing some of the applications before March 16, 2013 as Track 1 (expedited) filings and some as normal (non-expedited) filings. The prosecution of the expedited applications can provide beneficial information for the non-expedited applications before the costs of continued prosecution are incurred.

Charles R. Macedo is a partner at Amster, Rothstein & Ebenstein LLP. His practice specializes in all facets of intellectual property law. Mr. Macedo would like to thank Michael J. Kasdan and Richard Zemsky for their comments and assistance in preparing this submission.